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Raising the bar regulations released - the impact on trade mark opposition proceedings

Regulations implementing a number of reforms to the trade mark system in Australia have now been released following a period of public comment and response by IP Australia. This alert focuses on the procedural changes to trade mark opposition proceedings implemented by the amendments to the Trade Marks Act 1995 (Cth) by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 and Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1). The Government’s intention in making these amendments is to remove provisions which allow parties to delay the resolution of opposition proceedings, causing needless expense to other parties and creating extended uncertainty regarding the scope of the trade mark right in question.

Background

The amendments to the Trade Marks Act 1995 (Cth) introduced by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (the Amending Act) passed into law on 15 April 2012, come into force on 15 April 2013. Schedule 3 of the Amending Act introduced new provisions to address delays commonly seen in the resolution of trade mark opposition proceedings. The amendments to the Trade Marks Regulations 1995 (Cth) (the "Regulations") in the Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) set out the procedural requirements for these changes.

Trade Mark Opposition to Registration Proceedings

Trade mark opposition proceedings are initiated when a third party opposes the registration of a trade mark following examination and acceptance of the application for registration by the Registrar of Trade Marks.

Opposition proceedings, which are administrative in nature and conducted before the Registrar of Trade Marks, are intended to provide a faster, simpler and less costly way of resolving disputes as compared to court proceedings. However, the Government views the present opposition regime as unnecessarily complex and time consuming to the detriment of trade mark owners, their competitors and the general public. The amendments to the Trade Marks Act and the consequential amendments to the Regulations are designed to streamline the opposition process and remove unnecessary complexity and delays.

In addition, new provisions in relation to an opposition to removal of a trade mark registration for non-use under Part 9 of the Trade Marks Act mirror those addressing substantive trade mark oppositions outlined below.

Summary

We summarise the main changes to the opposition procedure as follows:

The Notice of Opposition will be in two parts which will consist of a Notice of Intention to Oppose and a Statement of Grounds and Particulars. The Notice of Opposition will be regarded as filed when both parts are filed;

The Notice of Intention to Oppose must now be filed within two months after acceptance of the trade mark application has been advertised. The period for filing the Notice of Opposition was previously three months.

The Statement of Grounds and Particulars must be filed within one month of filing the Notice of Intention to Oppose;

Extensions of time to file a Notice of Opposition will only be available in limited circumstances;

Applicants must now file a Notice of Intention to Defend within one month of receiving the Statement of Grounds and Particulars filed by the Opponent, otherwise the opposed application will lapse;

Documents and evidence filed by the parties in an opposition no longer need to be served on the other party. The Trade Marks Office will now be responsible for notifying the other party and providing them with copies of the documents and evidence filed;

A "cooling off" period is now available to allow for the parties to conduct negotiations and research with the objective of reaching a negotiated settlement. Both parties must agree to the "cooling off" period;

Extensions of time to file evidence will only be available in limited circumstances and the Registrar will have the discretion to decide the length of the extension; and

The decision as to whether a hearing will be an oral hearing or by written submissions will now be at the discretion of the Registrar.

Two part Notice of Opposition

At present a potential opponent has three months from the date that acceptance of a trade mark application is advertised to file a Notice of Opposition. An opponent can claim every ground of opposition in the Notice of Opposition and there is no requirement to provide any details in support of the notice of opposition. This can make it difficult for applicants to prepare their case in response.

Notice of Intention to Oppose and Statement of Grounds and Particulars

Opponents will now be required to file a Notice of Intention to Oppose within two months of advertising of acceptance, and a Statement of Grounds and Particulars setting out the grounds of opposition and material facts supporting those grounds within one month of filing of the Notice of Intention to Oppose. The Notice of Opposition is only regarded as filed when both of these documents have been filed. Consequently, although the total time to file the Notice of Opposition is still three months, an opponent will now need to act within two months, from the date acceptance of the application is advertised, to initiate an opposition.

If the Statement of Grounds and Particulars filed by the opponent is assessed as inadequate by the Registrar, the Registrar may require the opponent to provide further and better particulars or dismiss the opposition. If the Registrar assesses the further information provided still to be inadequate the Registrar may dismiss the opposition. However, the Registrar’s decision to dismiss the opposition under this provision would be open to review before the Administrative Appeals Tribunal (AAT).

The Notice of Intention to Oppose and Statement of Grounds and Particulars can be corrected for clerical error or obvious mistake. It will also be possible to amend or add a new Ground of Opposition but only if the Registrar is satisfied that this relates to information that the opponent could not reasonably have been aware at the time of filing the statement. Consequently, much more thought will need to be given to the grounds of opposition by clients and their lawyers at the outset.

Extensions of time to file the Notice of Opposition

An extension of time to lodge the Notice of Intention to Oppose (or for filing a Statement of Grounds and Particulars) will now only be available in limited circumstances - on the basis of an error or omission on part of the potential opponent or agent, the Registrar or IP Australia employee or circumstances beyond the potential opponent’s control. Extensions of time to oppose based on the conduct of genuine negotiations between the parties or research on the merit of the opposition or potential grounds by the opponent will no longer be available. The “cooling off” period, discussed below, is intended to provide this opportunity once the opposition proceedings have formally commenced.

Applicants now required to file a Notice of Intention to Defend

The amendments to the Trade Marks Act introduced a new requirement for trade mark applicants to indicate that they plan to defend an opposition by filing a Notice of Intention to Defend. This provision is designed to address situations where an applicant decides not to pursue their application for various reasons but the opponent is still put to the time and expense of proving their case.

The Notice of Intention to Defend must be filed by the applicant within one month from the day they are provided with a copy of the Statement of Grounds and Particulars of the opposition (by the Trade Marks Office). No official fee applies when filing a Notice of Intention to Defend. However, if an applicant fails to file a Notice of Intention to Defend, the trade mark application will lapse.

Provision of documents between the parties

Previously the parties to an opposition have been required to file documents and evidence with the Trade Marks Office and serve copies of these on the other party. Once a party files documents or evidence, the Trade Marks Office will now be responsible for notifying the other party and providing them with copies of these documents. This reform is intended to standardise procedures for commencing an opposition and allow the Trade Marks Office to maintain better control over this process. In addition, the Trade Marks office will now be able to provide or make documents available in electronic form.

Introduction of Cooling Off Period

A “cooling off” period after opposition proceedings have commenced, by the agreement of the parties, has been introduced to allow parties to conduct negotiations and research with the objective of reaching a negotiated settlement. An initial suspension period of six months is provided with a further six months available if agreed to between the parties. The cooling off period cannot be extended beyond this twelve month period and only one cooling off period is available in an opposition proceeding.

Timelines for Filing Evidence

Time frames for the parties to compile and file their evidence in support and answer will be three months in each case. The period of time for the opponent to file evidence in reply is reduced from three months to two months.

Extensions of Time to File Evidence

The Registrar can only extend the period for filing evidence in limited circumstances if satisfied that the requesting party has made all reasonable efforts to comply with the relevant filing requirements since the start of the opposition and, either:

despite acting promptly and diligently at all times to ensure filing of the evidence within the period, is unable to do so; or

cannot file evidence in the period because of some other “exceptional circumstances”.

The Registrar will have the power to decide the length of the extension, depending upon what is "reasonable in the circumstances".

Hearings

The Regulations clarify that a hearing can be held on the request of either party or on the Registrar’s initiative. In addition, the decision as to whether the hearing will be held orally or on written submissions by the parties will be at the Registrar’s discretion. If an oral hearing is to be held the parties will now be required to provide a summary of their submissions – ten business days prior to the hearing in the case of the opponent and five business days prior to hearing in the case of the applicant.

Conclusion

Overall, the amendments to the Trade Marks Act and Regulations in relation to trade mark opposition procedures are directed at creating a simpler, more cost effective and timely process for resolving trade mark oppositions. The Regulations provide further detail to the proposed scheme. Some provisions, such as the new requirement for applicants to file a Notice of Intention to Defend will assist opponents and applicants will have a better indication of the scope of the case against acceptance of their trade mark application on receipt of the opponent’s Statement of Grounds and Particulars. However, the stricter timelines and limited grounds for seeking an extension of time to file documents and evidence set out by the amendments to the Trade Marks Act and Regulations are likely to prove challenging for some parties who may find it difficult to compile the necessary information in time.

In response to concerns regarding the practical implementation of these legislative changes, IP Australia has re-issued the explanatory material supporting the Regulations and will provide new practice guidelines and updates to the Trade Marks Examination Manual to provide assistance.

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